Yankees Strike Back (In the Courtroom)

The New York Yankees are traditionally known for their hard fought battles on the diamond. However, they recently scored a significant victory off the field. The organization successfully opposed a trademark registration for BASEBALLS EVIL EMPIRE, making it clear that the Yankees are the rightful owners of the moniker, whether they like it or not.

As explained by the Trademark Trial and Appeal Board, the phrase was coined in 2002 by Red Sox club president, Larry Lucchino. In response to the Yankees signing of highly coveted pitcher, Jose Contreras, Lucchino reportedly stated: "The evil empire extends its tentacles even into Latin America." The Yankees have since embraced the nickname, even playing ominous Star Wars music during games.

Hoping to capitalize on the association, Evil Enterprises, Inc. filed an application to register the marks for BASEBALLS EVIL EMPIRE for use on "clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats." The New York Yankees opposed the registration on an umber of grounds, including likelihood of confusion, false suggestion of a connection, and disparagement.

The Trademark Trial and Appeal Board ultimately sided with the Yankees in denying the application, finding that confusion would likely result. "[T]he record shows that there is only one EVIL EMPIRE in baseball and it is the New York Yankees," the opinion states.

Yankees Strike Back (In the Courtroom) by Donald Scarinci The New York Yankees are traditionally known for their hard fought battles on the diamond. However, they recently scored a significant victory off the field. The organization successfully opposed a trademark registration for BASEBALLS EVIL EMPIRE, making it clear that the Yankees are the rightful owners of the moniker, whether they like it or not. As explained by the Trademark Trial and Appeal Board, the phrase was coined in 2002 by Red Sox club president, Larry Lucchino. In response to the Yankees signing of highly coveted pitcher, Jose Contreras, Lucchino reportedly stated: "The evil empire extends its tentacles even into Latin America." The Yankees have since embraced the nickname, even playing ominous Star Wars music during games. Hoping to capitalize on the association, Evil Enterprises, Inc. filed an application to register the marks for BASEBALLS EVIL EMPIRE for use on "clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats." The New York Yankees opposed the registration on an umber of grounds, including likelihood of confusion, false suggestion of a connection, and disparagement. The Trademark Trial and Appeal Board ultimately sided with the Yankees in denying the application, finding that confusion would likely result. "[T]he record shows that there is only one EVIL EMPIRE in baseball and it is the New York Yankees," the opinion states. Although the Yankees have never officially used the moniker, the TTAB noted that the Yankees submitted "hundreds of news articles, stories, and blog entries, as well as admissions by [Evil Enterprises], demonstrating that the term EVIL EMPIRE is widely used as a shorthand reference or nickname for [the Yankees]." It found this evidence was sufficient to demonstrate that the trademark "has such fame and renown that the use of BASEBALLS EVIL EMPIRE as a trademark by an unauthorized user will falsely suggest a connection with the Yankees." However, the TTAB did disagree with the disparagement claim, finding that the marks did not bring the Yankees into "contempt or disrepute." Rather, the opinion noted that the nickname had instead become a "badge of honor" among Yankees fans. "Having succumbed to the lure of the dark side, [the Yankees] will not now be heard to complain about the judgment of those who prefer the comfort of the light," Administrative Trademark Judge Thomas Show eloquently concluded. Donald Scarinci is a New Jersey lawyer and managing partner of Scarinci Hollenbeck, LLC a regional law firm with offices in New York, New Jersey and Washington, D.C. His columns feature legal issues in the news and articles about the business and practice of law. He also writes regularly in Politicker NJ and the Constitutional Law Reporter.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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